Gowling WLG Canada
The Patent Act is undergoing amendment courtesy of Bill C-43, known as the Economic Action Plan 2014 Act, No 2, tabled in the House of Commons on October 23 2014. Canada is fulfilling its undertakings to adhere to the Patent Law Treaty adopted in Geneva on June 1 2000, which provides for:
- worldwide harmonisation of national patent formalities;
- simplification of national patent office procedures; and
- standardisation of mechanisms to help avoid unintentional loss of patent rights resulting from failure to comply with formalities and specified time limits.
However, the amendments introduce additional changes beyond Canada’s treaty obligations.
The changes to the Patent Act provided by the amendments focus on a number of different areas, including:
- time limits for payment of fees;
- reinstatement periods;
- priority requests;
- application content; and
- application/patent transfers.
The amendments also provide for the authority of the governor in council to make regulations under the act in order to implement the amendments.
Fee payments under the Patent Act include:
- an application fee for filing the application;
- annual maintenance fees required to maintain the application (or a patent) in force; and
- an examination fee required to initiate formal examination of the application.
Under the existing act, the application fee must be paid in order to obtain a filing date. Under the amendments, if the application fee is not paid on the date on which all of the other filing date requirements are met, the commissioner of patents will send a notice informing the applicant of non-payment and requiring payment with a late fee by a prescribed date
Under the existing act, each maintenance fee to keep an application alive or a patent in force must be paid either by its prescribed date or within a reinstatement period of 12 months of that prescribed date with an additional late fee. Failure to provide payment within the reinstatement period will result in a 'dead' application or lapsed issued patent. Under the amendments, similar to the application fee, if the maintenance fee is not paid within the prescribed date the commissioner of patents will send a notice informing the applicant of non-payment. Payment must be made within the later of six months from the prescribed date or two months from the date of the notice.
These amendments replace the straightforward reinstatement period (see below) of the existing act by inserting an extension period of at least six months following the original deadline before a new, more onerous reinstatement process is triggered.
A similar process is instituted by the amendments in relation to requests for examination. However, the extension period is a maximum of two months from the date of a notice from the commissioner of patents when the original payment deadline is not met.
Abandonment of an application or patent under the existing Patent Act will occur if certain deadlines – such as making fee payments and filing good-faith responses to examination requisitions – are not met. Reinstatement rules are simple and the same for all types of abandonment: within 12 months of abandonment, the applicant must complete the action that was required to be taken to avoid the abandonment and submit a simple reinstatement request with a reinstatement fee.
However, under the amendments, new and more onerous reinstatement requirements are provided for abandoned applications and patents. The reinstatement process will be more complicated, as an additional requirement is that the applicant or patentee additionally state “reasons for the failure to take action that should have been taken to avoid the abandonment”. Further, the commissioner of patents must determine that the failure occurred in spite of the due care required and inform the applicant or patentee of this determination. Another provision in the amendments is that the required “reasons for the failure” can be challenged in the Federal Court if the stated reasons contain a material allegation that is untrue.
As a result of these amendments, it appears that applicants will no longer be permitted to abandon an application electively after allowance to reopen prosecution.
Prudent applicants and patentees may wish to make greater efforts to comply with prescribed dates to avoid abandonment and reliance on the reinstatement process.
Under the existing Patent Act, a request for priority to a previously filed patent application (the 'priority application') can be made only if the application is filed within 12 months of the filing date of the priority application. Under the amendments, advantageously, this 12-month period is extended to 14 months, provided that any delay in filing after the 12 months by the applicant was unintentional. However, the amendments also provide for the Federal Court to revoke the priority claim if it is determined that the delay was intentional.
Under the existing act, no new descriptive or illustrative material can be added to a filed application. In other words, any changes to the description or drawings of an application must be “inferable” from the description or drawings as originally filed. Under the amendments, a stated reference to the priority application can be provided at the time of filing the application, rather than explicitly providing all or part of the description or drawings contained in the priority application. The stated reference can also be provided up to six months after filing the application. Advantageously, use of the stated reference will allow added description or drawings to the filed application that would have otherwise been considered new under the existing act, provided that the added description or drawings can be deemed as completely contained within the priority application.
The amendments introduce new title transfer provisions directly into the Patent Act. These provisions include the following:
- The submission of a patent transfer will be voided in the event that recordation against title of the patent has already occurred, even if the patent transfer is dated earlier than the recordation; and
- The commissioner of patents can remove the recording of a transfer of an application or patent on receipt of evidence satisfactory to show that the transfer should not have been recorded.
These new title transfer provisions will influence the timeliness of submitting patent transfers, as well as the ability to void the recordation of patent/application transfers.
Noted other changes
Among the many other amendments contained in Bill C-43, the following are noteworthy:
- Under the amendments, third-party rights may be affected in relation to applications that were abandoned or where certain fees were paid short of abandonment during extension periods. No action for infringement of a patent lies against a person in respect of an act that would otherwise constitute an infringement of the patent if that act is committed in good faith by the person during a period that is established by regulations to be made under the new amendments. Similar rights may be extended to acts or preparations undertaken by a person during a period that is established by regulations to be made under the new amendments where the business of the third party is transferred to another.
- The amendments provide powers to the governor in council to make rules or regulations “respecting the circumstances in which an applicant, patentee or other person may or must be represented by a patent agent or other person in business before the Patent Office”. Also noted is that the amendments repeal Section 29 concerning non-resident applicants (those applicants not residing in or carrying on business at a specified address in Canada) and representative nominees for non-resident applicants. No doubt the Canadian patent profession will be interested in how these amendments will be interpreted and implemented.
- Also changed by the amendments is Section 12(1)(j.8) of the Patent Act, which authorises the commissioner of patents to extend the period for doing anything under the act “during or after the end of the time period”, if the commissioner of patents “considers that circumstances justify the extension”. This is an interesting change and its scope of effect remains unknown. Under the existing act the commissioner of patents does not have carte blanche authority to extend periods “for doing anything under the Act”.
The changes to the Patent Act will come into force on a date to be fixed by the governor in council. It will take some time to prepare the new regulations and prepare the Patent Office for the changes. If recent changes to the Trademarks Act are any guide, the changes are unlikely to be in force until after 2015.
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Gowling WLG Canada
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